Rembrandt Patent Innovations v. Apple, Inc. ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
REMBRANDT PATENT INNOVATIONS, LLC,
REMBRANDT SECURE COMPUTING, LP,
Plaintiffs-Appellants
v.
APPLE, INC.,
Defendant-Appellee
______________________
2016-2324
______________________
Appeal from the United States District Court for the
Northern District of California in Nos. 3:14-cv-05093-
WHA, 3:14-cv-05094-WHA, Judge William H. Alsup.
______________________
Decided: November 22, 2017
______________________
J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for
plaintiffs-appellants. Also represented by EDWARD
ROBERT YOCHES; JACOB ADAM SCHROEDER, Palo Alto, CA.
MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, argued for defendant-appellee. Also
represented by MELANIE L. BOSTWICK, KATHERINE M.
KOPP, AMISHA R. PATEL; CHRISTOPHER JAMES GASPAR,
2 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
ANDREW LICHTENBERG, Milbank, Tweed, Hadley &
McCloy LLP, New York, NY; MARK C. SCARSI, Los Ange-
les, CA.
______________________
Before PROST, Chief Judge, CHEN, and HUGHES, Cir-
cuit Judges.
CHEN, Circuit Judge.
Plaintiffs (collectively, Rembrandt) sued Apple, Inc.
(Apple) for infringement of U.S. Patent No. 6,185,678 (the
’678 patent). The district court construed certain terms in
the ’678 patent’s claims and granted Apple’s motion for
summary judgment of noninfringement. Rembrandt
appeals the district court’s claim construction and nonin-
fringement rulings. We affirm.
BACKGROUND
I. The ’678 Patent
The ’678 patent describes techniques for securely ini-
tializing, or “bootstrapping,” a computer system. ’678
patent col. 1 ll. 23–25. The asserted claims recite systems
and methods for verifying the integrity of a computer’s
boot components and recovering at least one boot compo-
nent that is found to be corrupted. Verification involves a
“chain of integrity checks,” executed by certain hardware
and a computer’s Basic Input Output System (BIOS), to
determine whether boot components have been corrupted.
Id. col. 6 ll. 6–24. Recovery involves the replacement of
any corrupted boot components. Apple’s noninfringement
arguments hinge on whether the claimed recovery step
must be performed automatically without human inter-
vention, as Apple argues, or whether there is no such
requirement, as Rembrandt argues.
Figure 2a depicts the functional steps and components
used in a preferred embodiment of the claimed invention:
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 3
4 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
In Figure 2a, verification begins when a computer is
powered on and executes a “Power on Self Test” (POST) at
functional layer 200, which tests the computer’s processor
and initiates other tests controlled by the BIOS. Id. col. 7
l. 61 – col. 8 l. 11. Components at layer 200 are “assumed
to be valid.” Id. col. 8 ll. 48–49. Control is subsequently
passed from one functional layer to the next, but only
after each layer cryptographically verifies the integrity of
components in the next layer. Once initialized, each layer
adds correspondingly higher levels of capability to the
system. Verification of all boot layers ensures the sys-
tem’s integrity before control is passed to the computer’s
operating system.
Recovery takes place only if verification detects an in-
tegrity failure. “Once an integrity failure is detected, the
invention uses a secure protocol to inform a trusted
repository that a failure has occurred and to obtain a
valid replacement component.” Id. col. 4 ll. 49–51. As
depicted in Figure 2a, the claimed “trusted repository”
may be implemented via the “AEGIS ROM” component
for “secure recovery of any integrity failures found during
the initial bootstrap.” Id. col. 10 ll. 47–67.
The specification describes the ’678 patent’s invention
as “relat[ing] to an architecture for initializing a computer
system and more particularly to a secure bootstrap pro-
cess and automated recovery procedure.” ’678 patent col.
1 ll. 23–25. According to the specification, the invention
achieves a reduction in the total cost of owning a personal
computer by “automatically detecting and repairing
integrity failures,” without requiring a user to call tech-
nical support staff or suffer any machine downtime.
Id. col. 4 ll. 60–65.
Rembrandt asserted claims 1, 3, 4, and 7 of the ’678
patent. Independent claim 1 recites:
An architecture for initializing a computer
system comprising:
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 5
a processor;
an expansion bus coupled to said processor;
a memory coupled to said expansion bus, said
memory storing a system BIOS for execution by
said processor upon power up of the computer sys-
tem;
a plurality of boot components coupled to said
expansion bus and accessed by said processor
when said system BIOS is executed;
a trusted repository coupled to said expansion
bus; and
means for verifying the integrity of said boot
components and said system BIOS wherein integ-
rity failures are recovered through said trusted
repository.
Id. col. 21 l. 39 – col. 22 l. 11.
Claim 3 depends from claim 1 and recites:
An architecture for initializing a computer
system according to claim 1, wherein said trusted
repository is a host computer communicating with
said computer system through a communications
interface coupled to said expansion bus.
Id. col. 22 ll. 15–19.
Independent claim 4 recites:
A method for initializing a computer system
comprising the steps of:
(1) invoking a Power on Self Test (POST);
(2) verifying the integrity of a system BIOS;
(3) verifying the integrity of a boot component;
and
6 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
(4) when said boot component fails, recovering
said failed boot component.
Id. col. 22 ll. 20–26.
Claim 7 depends from claim 4 and recites:
The method of claim 4, wherein step (4) em-
ploys a secure protocol to obtain a replacement
boot component from a trusted repository to re-
place said failed boot component.
Id. col. 22 ll. 37–40.
II. The Accused Products
Rembrandt accuses various models of Apple’s iPhone,
iPad, and iPod Touch devices of infringing the asserted
claims. Each of the accused products runs Apple’s operat-
ing system for mobile devices, iOS. When products run-
ning iOS are powered on, their processors initiate a
verification procedure that uses a chain of integrity
checks, starting with the execution of software stored in a
SecureROM component. Additional software components
in the boot sequence include, in order of access: the LLB,
iBoot, and iOS kernel. Each of the boot components,
other than the iOS kernel, checks the integrity of the next
boot component by comparing a measured cryptographic
value of the next component with a value obtained from a
stored digital signature. When iOS’s boot process suc-
ceeds, each component in the boot chain is verified, and
the iOS kernel loads the iOS operating system.
When the integrity of a boot component cannot be ver-
ified, the accused mobile devices enter one of two recovery
modes: Device Firmware Update (DFU) Mode or Recovery
Mode. The devices enter DFU Mode when SecureROM
fails to verify the integrity of LLB or when LLB fails to
verify the integrity of iBoot. The devices enter Recovery
Mode when iBoot fails to verify the integrity of the iOS
kernel. Upon entering a recovery mode, Apple’s devices
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 7
will display either a blank screen (in DFU Mode) or an
image prompting users to restore their devices using
Apple’s iTunes software (in Recovery Mode).
In either recovery mode, Apple’s customer support
web pages and service guides instruct a user to connect
the corrupted mobile device to a computer running
iTunes. The corrupted device will be unusable unless the
user connects it to a computer running iTunes and initi-
ates the recovery process. When installed on a computer,
iTunes generally launches itself automatically when it
detects a connection to an iOS device that is in recovery
mode. Once connected, iTunes displays a dialog box
prompting the user to select “OK” or “Restore” to proceed
with the recovery process. After a user opts to initiate
recovery, iTunes contacts a remote Apple server, down-
loads replacement boot components, cryptographically
verifies the replacement components’ integrity, and
installs the new components on the corrupted device to
complete recovery.
III. Procedural History
Rembrandt filed suit in January 2014 in the United
States District Court for the Eastern District of Texas.
The case was later transferred to the Northern District of
California. Apple moved for summary judgment of nonin-
fringement in May 2016, contending that the asserted
claims require automatic recovery and that Apple’s mobile
products “cannot recover without manual intervention.”
J.A. 1030. Rembrandt opposed, arguing that (1) the
asserted claims do not require automatic recovery; and
(2) even if the claims require automatic recovery, Apple’s
products still infringe, either literally or under the doc-
trine of equivalents.
The district court granted Apple’s motion, holding
that (1) the asserted claims, when read in light of the
specification, require automatic recovery; and (2) Apple’s
devices do not infringe because they do not use automatic
8 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
recovery. Although the asserted claims do not recite the
word “automatic,” the district court placed weight on,
inter alia, the specification’s characterization of the
invention as “relat[ing] to . . . a secure bootstrap process
and automated recovery procedure.” J.A. 8 (quoting ’678
patent col. 1 ll. 23–25) (emphasis added). The district
court also noted the specification’s disparagement of prior
art recovery processes that require human interaction. It
further observed that the specification repeatedly refers
to automatic recovery processes as advantageously elimi-
nating the need for phone calls to technical support staff
and associated downtime. In addition, the district court
found significant that “[t]here is not a single reference to
recovery with human intervention” in the patent. J.A. 9.
In light of its claim construction opinion, the district
court granted summary judgment of no literal infringe-
ment. The district court opined that, contrary to Rem-
brandt’s arguments, “[a]utomatic recovery simply cannot
mean recovery started manually, even if the technical
restoration of a new component is ultimately performed
automatically (after a human has commenced the pro-
cess).” J.A. 13. The district court acknowledged that the
specification discloses “circumstances in which human
interaction may be necessary to recover a device,” but
determined that these circumstances “are clearly limited
to instances when several attempts at automatic recovery
have failed, and in fact, they do not provide for recovery
at all,” as required in the claims. Id.The district court also granted summary judgment of
no infringement by equivalents. The district court held
that Apple’s recovery process did not solve the same
problem purported to be solved by the ’678 patent. For
example, the district court noted that the accused prod-
ucts are “bricked,” i.e., rendered inoperable “from the time
they enter recovery mode until they are recovered,” such
that “a user will still experience a denial of service until
he is able to reach a computer running iTunes.” J.A. 14.
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 9
As noted, supra, the ’678 patent’s specification repeatedly
identifies the avoidance of this downtime as an advantage
of the ’678 patent’s automated solution. According to the
district court, “[i]f Apple’s recovery procedure that re-
quired human intervention could be equivalent to auto-
matic recovery even though the former failed to address
all of the problems solved by the latter, that would vitiate
the automatic limitation present in the properly con-
strued claims.” J.A. 15.
Rembrandt appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
STANDARD OF REVIEW
We apply the law of the regional circuit when review-
ing a district court’s grant of summary judgment. Classen
Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892,
896 (Fed. Cir. 2015). The Ninth Circuit reviews a grant of
summary judgment de novo. Ariz. Dream Act Coalition v.
Brewer, 818 F.3d 901, 908 (9th Cir. 2016). A “judge’s
function at summary judgment is not to weigh the evi-
dence and determine the truth of the matter but to de-
termine whether there is a genuine issue for trial.” Tolan
v. Cotton, 134 S. Ct. 1861, 1866 (2014) (internal quotation
marks and citation omitted). The evidence, and infer-
ences drawn therefrom, must be viewed in the light most
favorable to the opposing party. Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587–88 (1986).
DISCUSSION
I. Claim Construction
The “ultimate issue of the proper construction of a
claim” is “a question of law.” Teva Pharms. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 839 (2015). “[W]hen the
district court reviews only evidence intrinsic to the patent
(the patent claims and specifications, along with the
patent’s prosecution history), the judge’s determination
will amount solely to a determination of law, and the
10 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
Court of Appeals will review that construction de novo.”
Id. at 841. “[S]ubsidiary factfinding in patent claim
construction” is reviewed for “clear error.” Id. at 840.
“The process of construing a claim term begins with
the words of the claims themselves.” Virnetx, Inc. v. Cisco
Sys., Inc., 767 F.3d 1308, 1316 (Fed. Cir. 2014). However,
the claims “do not stand alone. Rather, they are part of ‘a
fully integrated written instrument,’ . . . consisting prin-
cipally of a specification that concludes with the claims.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (quoting Markman v. Westview Instruments, Inc., 52
F.3d 967, 978 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996)).
“For that reason, claims ‘must be read in view of the
specification, of which they are a part.’” Phillips, 415 F.3d
at 1315 (quoting Markman, 52 F.3d at 979). Indeed, the
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a disputed term.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996).
In this case, the district court relied primarily on
statements in the ’678 patent’s specification when con-
struing the claims and expressly declined to rely on
testimony from Rembrandt’s expert that contradicted the
claims’ meaning established by the intrinsic record. See
J.A. 5–6. We agree with the district court that the intrin-
sic evidence clearly limits the scope of the ’678 patent’s
invention to automatic recovery. We likewise agree with
the district court’s decision to disregard testimony from
Rembrandt’s expert that contradicts the claims’ meaning
established by the intrinsic evidence. Vitronics,
90 F.3d at 1583.
The asserted claims do not recite the word “automat-
ic” or any variation thereof and do not appear to require
automated recovery when read in isolation. However, as
explained in Phillips, claims should be construed in
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 11
conjunction with the specification. In Verizon Services
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308
(Fed. Cir. 2007), we held that, when a patent “describes
the features of the ‘present invention’ as a whole, this
description limits the scope of the invention.” The ’678
patent repeatedly characterizes the recovery process of
the “present invention” as being “automated.”
For example, the patent’s abstract explains that “the
bootstrap process of the present invention can be aug-
mented with automated recovery procedures” (emphasis
added).
In defining the field of the invention, the patent
states: “[t]his invention relates to an architecture for
initializing a computer system and more particularly to a
secure bootstrap process and automated recovery proce-
dure.” ’678 patent col. 1 ll. 23–25 (emphasis added).
In addition, the Summary of the Invention explains
that the total cost of ownership is reduced “through
automatically detecting and repairing integrity failures,
thereby permitting the user to continue to work without
the nuisance of a trouble call to support staff and the
associated down time.” Id. col. 4 ll. 60–65 (emphasis
added).
Finally, the Detailed Description of the Preferred
Embodiments describes only a single embodiment of the
claimed recovery functionality—referred to as “AEGIS.”
This embodiment recovers from an integrity failure auto-
matically, without human intervention. According to the
specification, “[a]utomatically detecting and repairing
integrity failures,” using AEGIS, “permits the user to
continue to work without the nuisance of a trouble call to
the support staff and the associated down time spent
waiting.” Id. col. 20 ll. 45–48. Elsewhere, the specifica-
tion explains that the invention’s “entire” AEGIS recovery
process “occurs without user intervention.” Id. col. 6 l. 24,
see also col. 10 l. 8 (“This entire [AEGIS boot] process
12 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
occurs without user intervention.”) (emphasis added).
The clear takeaway from reviewing the ’678 patent is that
its process for detecting and recovering failed boot compo-
nents is necessarily an automated one, i.e., conducted
without human intervention.
That understanding of the patent is reinforced by its
criticism of prior art recovery methods that involved
human intervention. In Poly-America, L.P. v. API Indus-
tries, Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016), we
acknowledged that “an inventor may disavow claims
lacking a particular feature when the specification distin-
guishes or disparages prior art based on the absence of
that feature.” See also Openwave Sys., Inc. v. Apple Inc.,
808 F.3d 509, 513 (Fed. Cir. 2015); SightSound Techs.,
LLC v. Apple Inc., 809 F.3d 1307, 1317 (Fed. Cir. 2015).
This case presents such a situation. The ’678 patent
disparages prior art recovery procedures that “required
human interaction.” See ’678 patent col. 3 ll. 42–45. For
example, the ’678 patent discusses a prior art procedure
that requires a user to boot from a floppy disk and ex-
plains that this procedure is “inferior to the present
invention,” because repairing corrupted boot components
using unverified floppy disks may introduce “unauthor-
ized” software into the system. Id. col. 3 ll. 45–57. “This
is in contrast to the present invention [of the ’678 patent]
which provides automatic recovery of all of the bootstrap
components including ROM chips.” Id. col. 3 ll. 57–59.
According to the ’678 patent, avoiding human participa-
tion makes the ’678 patent’s recovery process more secure
in comparison to prior art methods.
Rembrandt argues that there is no clear and unmis-
takable disclaimer because the ’678 patent refers to the
terms “human interaction” or “user intervention” only
three times, and none of these references literally pro-
claims a disclaimer of claim scope. But disclaimer does
not require express statements by the patentee identify-
ing the surrendered claim scope. Rather, it may be im-
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 13
plicit, so long as it is sufficiently clear. See, e.g., Straight
Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356,
1361 (Fed. Cir. 2015).
The clear, repetitive, and uniform nature of the ’678
patent’s description of the automated recovery process, in
combination with its rejection of prior art methods that
require some human involvement, “limit[] the scope of the
invention.” Verizon, 503 F.3d at 1308; see also Honeywell
Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed.
Cir. 2006) (“On at least four occasions, the written de-
scription refers to the fuel filter as ‘this invention’ or ‘the
present invention’ . . . . The public is entitled to take the
patentee at his word and the word was that the invention
is a fuel filter.”).
According to Rembrandt, the specification describes
human intervention as falling within the scope of what
the patent describes as automatic recovery. Rembrandt
points to a statement in the specification that, “[o]nce the
repair is completed [by the claimed recovery process], the
system is restarted (warm boot) to ensure that the system
boots.” Open. Br. 32 (quoting ’678 patent col. 10 ll. 6–8).
Rembrandt then argues that the aforementioned “warm
boot” is defined in the specification as resulting from user
intervention—specifically, a user’s simultaneous pressing
of the ctrl, alt, and del keys. Id. (citing ’678 patent col. 8
ll. 3–5). However, this latter portion of the specification
merely describes prior art methods for invoking a POST
on an IBM PC and does not suggest that the ctrl-alt-del
command is the only way to initiate a warm boot. See
’678 patent col. 7 l. 63 – col. 8 l. 5. Indeed, the warm boot
that takes place after completion of the claimed recovery
14 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
process is initiated “without user intervention,” as de-
scribed in the specification. Id. col. 10 l. 8. 1
Referring to the patent’s abstract, Rembrandt notes
that it uses permissive language to explain that “the
bootstrap process of the present invention can be aug-
mented with automated recovery procedures.”
Open. Br. 33 (quoting ’678 patent abstract). Rembrandt
argues that automation of the recovery process is there-
fore optional in view of this language. Apple responds
that the abstract does not define automation as an op-
tional feature, but instead describes recovery as an
optional “addition to the integrity check.” See Resp. Br.
35. As noted by Apple, the “can be augmented” language
refers to optional augmentation of the verification func-
tionality with recovery functionality, with the latter
always being “automated” when it is included. 2
Rembrandt contends that the district court “over-
looked” several examples of human intervention discussed
in the specification. Open. Br. 35. For example, Rem-
brandt refers us to the following excerpt:
In each case, AEGIS attempts to recover from a
trusted repository, step 298, as discussed below.
Should a trusted repository be unavailable after
several attempts, then the client’s further action
depends on the security policy of the user. For in-
stance, a user may choose to continue operation in
1 Moreover, the fact that a warm boot takes place
after completion of the claimed recovery process is irrele-
vant to whether the recovery process may include human
involvement, because whatever takes place after the
recovery process cannot reasonably be considered to be a
part of that process.
2 All of the asserted claims require recovery.
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 15
a limited manner or may choose to halt operations
altogether.
Open. Br. 36 (quoting ’678 patent col. 10 ll. 19–25).
Rembrandt contends that this passage “requires the user
to choose how to proceed” when the trusted repository
cannot be reached for a replacement component, and
leaves open the possibility that the user may be able to
“finish the recovery process” after intervention. Open. Br.
36. However, as Apple points out, the above-quoted
portion of the specification does not describe any recovery
process. It therefore falls outside the scope of the claims,
because no component is recovered if the system is halted
or if a defective boot component is simply ignored and the
system operates in a limited manner. Moreover, Rem-
brandt cites no evidence to support its speculation that
recovery could be completed after further user interven-
tion.
Rembrandt also calls our attention to the specifica-
tion’s discussion of manual repair of ROM chips. The
relevant excerpt reads:
Automatically detecting and repairing integrity
failures permits the user to continue to work
without the nuisance of a trouble call to the sup-
port staff and the associated down time spent
waiting. A system administrator can monitor the
log of the AEGIS trusted repository and identify
those workstations that require “hands on” re-
pairs, e.g. ROM failure, and schedule the work to
be done when the user is not using the computer.
’678 patent col. 20 ll. 45–52. Rembrandt argues that the
above-quoted statements, in combination with the specifi-
cation’s teaching that “the present invention . . . provides
automatic recovery of all of the bootstrap components[,]
including ROM chips,” indicate that manual repairs are
encompassed within the patent’s conception of “automatic
recovery.” Open. Br. 37 (quoting ’678 patent col. 3 ll. 57–
16 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
59). As argued by Apple, however, the referenced “hands
on” repairs are simply “additional work, separate from
recovery,” that have nothing to do with the claimed recov-
ery process. Resp. Br. 43. The preambles of the patent’s
independent claims 1 and 4 respectively recite “[a]n
architecture for initializing a computer system” and “[a]
method for initializing a computer system.” ’678 patent
col. 21 l. 38, col. 22 l. 19 (emphases added). Hands-on
repair of ROMs, which are hardware components requir-
ing physical removal, see id. col. 12 ll. 14–16, would not
occur while the computer is “initializing,” as recited in the
claims’ preambles, but would instead occur during
“schedule[d]” downtime. See id. col. 20 ll. 48–52. Moreo-
ver, the specification repeatedly distinguishes recovery
processes that require downtime from the ’678 patent’s
invention. See, e.g., ’678 patent col. 4 ll. 60–65 (describing
a prior art embodiment that required “a trouble call to
support staff” and associated downtime).
In Rembrandt’s view, the U.S. Patent and Trademark
Office (PTO) “believed the claimed ‘recovery’ included
human activity, and the inventors never disagreed”
during prosecution of the application that led to the ’678
patent. Open. Br. 38. The PTO rejected claims of the ’678
patent over a prior art U.S. patent to Bramnick, which,
according to Rembrandt, used a recovery process that
required human intervention. The inventors did not
distinguish Bramnick on the basis that it used a non-
automatic recovery procedure. Thus, Rembrandt urges
that “the inventors tacitly agreed by not distinguishing
the art on this basis” that non-automatic processes fall
within the scope of the claims. Apple responds that (1)
Rembrandt waived this argument by not raising it before
the district court and, (2) even if the argument were
preserved, Rembrandt is wrong when it says that Bram-
nick used a non-automatic recovery procedure. We agree
with Apple on the latter point and therefore decline to
resolve the waiver dispute. The relevant portions of
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 17
Bramnick cited in the PTO’s rejection disclose an auto-
mated recovery procedure. See, e.g., J.A. 1902, col. 3 ll.
13–15 (stating that it is an “object of the [Bramnick]
invention to recover from a failure during a boot process
without user intervention”); see also id. col. 3 ll. 24–35
(describing Bramnick’s recovery process as designed to
automatically recover a computer to a functional state
such that, after recovery, a user may manually perform
other tasks).
Finally, Rembrandt argues that the specification’s
disparagement of non-automated recovery processes is
“[m]ere criticism of a particular embodiment encompassed
in the plain meaning of a claim term.” Open. Br. 32
(quoting Thorner v. Sony Computer Entm’t Am. LLC, 669
F.3d 1362, 1366 (Fed. Cir. 2012)). We disagree. The
exclusion of non-automated recovery processes is inextri-
cably interwoven into descriptions of the primary purpos-
es of the invention and how the invention overcomes
problems in the prior art. Under these circumstances,
where the patent clearly distinguishes non-automated
processes from the ’678 patent’s invention and makes
clear that non-automated processes do not accomplish the
invention’s stated objectives of improved security and
lower cost of ownership, the district court correctly con-
strued the claims to require automated recovery. 3
3 The district court opined that the claims would be
invalid for lack of written description if they covered non-
automatic recovery. See J.A. 12–13. Rembrandt argues
that the district court’s decision on this issue credited an
argument raised by Apple for the first time in its reply
brief in support of its motion for summary judgment, and
that we should consider the argument waived. See Open.
Br. 45–46; Resp. Br. 52–54. We do not rely on Apple’s
written description argument in reaching our decision on
claim construction.
18 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
II. Infringement
A. Literal Infringement
We apply a two-step analysis to determine whether
accused devices literally infringe a patent’s claims. First
the patent’s claims are “construed to determine their
scope.” Telemac Cellular Corp. v. Topp Telecom, Inc.,
247 F.3d 1316, 1330 (Fed. Cir. 2001). Second, “the claims
must be compared to the accused device.” Id. “Literal
infringement exists when every limitation recited in the
claim is found in the accused device.” Akzo Nobel Coat-
ings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1341 (Fed.
Cir. 2016). “[O]n appeal from a grant of summary judg-
ment of noninfringement, we must determine whether,
after resolving reasonable factual inferences in favor of
the patentee, the district court correctly concluded that no
reasonable jury could find infringement.” Brilliant In-
struments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344
(Fed. Cir. 2013).
Rembrandt argues that, even if the district court
adopted the correct claim construction, summary judg-
ment of no literal infringement was improper, because
Apple’s recovery process does not involve human interac-
tion. The recovery process in Apple’s mobile devices
starts “when the user chooses, in iTunes, to begin a soft-
ware restore of an attached device” and completes without
any further user involvement. Open. Br. 49 (quoting
testimony from Apple’s corporate representative). Rem-
brandt asserts that a user’s initiation of Apple’s recovery
process is not part of recovery and, therefore, that the
entire recovery process is automated. The ’678 patent,
however, expressly distinguishes user-initiated recovery
processes from the ’678 patent’s fully-automated process
when it disparages prior art procedures that initiate
recovery only after a user inserts and boots from a floppy
disk.
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 19
Rembrandt contends that waiting for user action after
detecting a failure, as done in Apple’s accused recovery
process, is “consistent with an embodiment in the specifi-
cation”—specifically, the embodiment discussed, supra,
that looks to a user’s “security policy” to determine what
to do after a trusted repository cannot be contacted to
complete recovery. Open. Br. 51–52 (quoting ’678 patent
col. 10 ll. 21–23). However, as already discussed, the
aforementioned embodiment falls outside the scope of the
claims because no component is recovered if the system is
halted or if a defective boot component is simply ignored
while the system operates in a limited manner.
Finally, Rembrandt argues that a user’s actions to ini-
tiate Apple’s recovery process “do not jeopardize the
integrity of the bootstrap process.” Id. at 53. This may be
true, but it does change the meaning of “automatic” as
understood in the context of the specification, which
describes the invention as, inter alia, eliminating down-
time associated with waiting for human intervention.
Apple’s process does not eliminate downtime associated
with human intervention. As the district court stated, the
term “automatic,” in the context of the ’678 patent’s
specification, requires “a recovery process that begins,
proceeds, and finishes without user intervention.”
J.A. 13. Apple’s accused recovery process does not begin
without user intervention and, therefore, no reasonable
jury could conclude that Apple’s products literally infringe
the asserted claims of the ’678 patent.
B. Infringement Under the Doctrine of Equivalents
“[A] product or process that does not literally infringe
upon the express terms of a patent claim may nonetheless
be found to infringe if there is ‘equivalence’ between the
elements of the accused product or process and the
claimed elements of the patented invention.” Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21
(1997). “What constitutes equivalency must be deter-
20 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
mined against the context of the patent, the prior art, and
the particular circumstances of the case.” Id. at 24 (quot-
ing Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
339 U.S. 605, 609 (1950)).
“Infringement may be found under the doctrine of
equivalents if every limitation of the asserted claim, or its
‘equivalent,’ is found in the accused subject matter, where
an ‘equivalent’ differs from the claimed limitation only
insubstantially.” Ethicon Endo-Surgery, Inc. v. U.S.
Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998).
“Whether a component in the accused subject matter
performs substantially the same function as the claimed
limitation in substantially the same way to achieve sub-
stantially the same result may be relevant to this deter-
mination.” Id.We have also explained that “the concept of equiva-
lency cannot embrace a structure that is specifically
excluded from the scope of the claims.” Dolly, Inc. v.
Spalding & Evenflo Cos., 16 F.3d 394, 400 (Fed. Cir.
1994). An argument under the doctrine of equivalents
fails if it “renders a claim limitation inconsequential or
ineffective.” Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
811 F.3d 1334, 1342 (Fed. Cir. 2016). As the Supreme
Court instructed, “if a theory of equivalence would entire-
ly vitiate a particular claim element, partial or complete
judgment should be rendered by the court, as there would
be no further material issue for the jury to resolve.”
Warner-Jenkinson, 520 U.S. at 39 n.8.
Rembrandt largely parrots arguments supplied by its
expert, Dr. Tygar, in arguing infringement under the
doctrine of equivalents. 4 Open. Br. 54–55. Dr. Tygar
4 Rembrandt argues that Apple waived any argu-
ment that its devices do not infringe under the doctrine of
equivalents. See Open. Br. 24 n.9; see also id. at 55
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 21
notes that the only user interaction required during either
of Apple’s two recovery processes is connection of a cor-
rupted device to iTunes and clicking on a button in a pop-
up message box. J.A. 1239. According to Dr. Tygar:
“Requiring a user to plug a device into a computer run-
ning iTunes and confirm to proceed with a recovery is an
insubstantial difference to requiring an ‘automatic’ recov-
ery without involving plugging in the product or asking
for the user’s confirmation to proceed.” Id. Dr. Tygar also
opines that the accused devices accomplish recovery (the
same function) using automation (the same way) to re-
store a device (the same result) as the methodology
claimed in the ’678 patent. Id. at 1239–40.
Dr. Tygar cites the ’678 patent’s embodiment that
looks to a user’s “security policy” to determine what to do
when a trusted repository cannot be contacted to complete
recovery and argues that this embodiment is “consistent
with” Apple’s process. As already discussed, this is not an
embodiment of the claimed invention. Dr. Tygar provides
no other explanation for why or how Apple’s non-
automated process is performed in the same way as the
claimed process. In Augme Techs., Inc. v. Yahoo! Inc.,
755 F.3d 1326, 1336 (Fed. Cir. 2014), we held that conclu-
sory expert testimony on the “way” prong of the function-
way-result test was insufficient, by itself, to create a
genuine issue of material fact on the issue of infringement
(arguing Apple “did not contest” Dr. Tygar’s opinions on
the doctrine of equivalents). We disagree. In Apple’s
motion for summary judgment, Apple argued that there
was insufficient evidence of infringement of any kind.
J.A. 1041. Rembrandt responded with specific arguments
under the doctrine of equivalents. J.A. 1160–61. Apple
responded to Rembrandt’s arguments in its reply brief.
J.A. 1384–85. The district court did not find waiver, and
neither do we.
22 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
by equivalents. See id. (“[E]ven if the testimony were of
proper scope, it is conclusory, stating only that the prod-
uct would ‘operate the same,’ ‘perform [the functions
described in the patent] in essentially the same way,’ and
‘would [produce] the same result.’ It offers no explanation
beyond these conclusory statements.” (citation omitted)).
As in Augme, conclusory testimony from Dr. Tygar on the
“way” prong is insufficient to create a genuine issue of
material fact for trial regarding infringement by equiva-
lents. Cf. Perkin–Elmer Corp. v. Westinghouse Elec.
Corp., 822 F.2d 1528, 1532 n.6 (Fed. Cir. 1987) (“That a
claimed invention and an accused device may perform
substantially the same function and may achieve the
same result will not make the latter an infringement
under the doctrine of equivalents where it performs the
function and achieves the result in a substantially differ-
ent way.”).
Rembrandt argues that “Apple has made an ‘unim-
portant and insubstantial’ change” to the ’678 patent’s
claimed process and is “engaged in precisely the conduct
the doctrine of equivalents evolved to prohibit.”
Open. Br. 58 (quoting Graver Tank, 339 U.S. at 607). We
do not view Apple’s choice to involve its users in the
recovery process as an unimportant or insubstantial
change. Apple’s non-automated procedure runs counter to
at least one of the stated purposes of the invention: to
lower the cost of ownership by eliminating downtime
associated with non-automated recovery. Rembrandt
would have us ignore this clearly articulated purpose of
the invention, as well as the specification’s explanation of
how the invention achieves this purpose by automating
the recovery process. This would be improper.
In J & M Corp. v. Harley-Davidson, Inc.,
269 F.3d 1360, 1366 (Fed. Cir. 2001), we held that “[t]he
scope of equivalents may . . . be limited by statements in
the specification that disclaim coverage of certain subject
matter.” This case presents such a scenario. Rembrandt
REMBRANDT PATENT INNOVATIONS v. APPLE, INC. 23
cannot recapture under the doctrine of equivalents what
the specification clearly gives up. See Augme Techs., Inc.
v. Yahoo! Inc., 755 F.3d 1326, 1335 (Fed. Cir. 2014)
(“Augme’s arguments that the Combined RMX Module is
equivalent to the embedded first code module are essen-
tially identical to its claim construction arguments: name-
ly that linked code can fall within the definition of
embedded code. No reasonable jury could find equiva-
lence here because doing so would require a determina-
tion that embedded code is substantially the same as
linked code—the very thing that the construction of
‘embedded’ excludes.”). As in Augme, the claims of the
’678 patent, when properly construed, exclude the accused
functionality from their coverage. Therefore, Rembrandt’s
arguments that the district court made improper factual
findings and that there are disputed issues of fact regard-
ing infringement under the doctrine of equivalents are
unavailing. No reasonable jury could find infringement
by equivalents, because no reasonable jury could find that
Apple’s non-automated recovery is substantially the same
as the ’678 patent’s automated recovery. Moreover,
because such a finding would “entirely vitiate a particular
claimed element,” there can be no infringement by equiva-
lents. Power Integrations, Inc. v. Fairchild Semiconductor
Int’l, Inc., 843 F.3d 1315, 1344 (Fed. Cir. 2016) (quoting
Lockheed Martin Corp. v. Space Systems/Loral, Inc.,
324 F.3d 1308, 1321 (Fed. Cir. 2003)) (holding that a
limitation required by the proper construction of claim
terms would be vitiated if the jury’s finding of infringe-
ment by equivalents were upheld).
We have considered Rembrandt’s other arguments
and find them to be unpersuasive. 5
5 Rembrandt states in its opening brief: “If the
Court remands this case, Rembrandt respectfully requests
reassignment to a different district judge.”
24 REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
CONCLUSION
Because the district court did not err in its claim con-
struction and noninfringement rulings, the district court’s
judgment is
AFFIRMED
COSTS
No costs.
See Open. Br. 58. Because we affirm the district court,
Rembrandt’s request for reassignment, which is contin-
gent on there being a “remand,” appears to be moot.
Moreover, having reviewed Rembrandt’s arguments and
the pertinent portions of the record, we conclude that
reassignment is, in any event, unwarranted. See Int’l
Rectifier Corp. v. Samsung Electronics Co., 424 F.3d 1235,
1244 (Fed. Cir. 2005) (applying Ninth Circuit law). We
therefore deny Rembrandt’s request for reassignment.